Apple sued Amazon in 2011, saying consumer confusion was likely.

Apple has not been shy about going after competitors in court in recent years, and those battles have not been limited to the giant patent lawsuits with Samsung that have garnered worldwide attention. In a federal trademark lawsuit set in Oakland, the company sued Amazon over its use of the phrase "App Store for Amazon," saying it infringes on the trademark for Apple's App Store.

Amazon responded in court papers, arguing that the words "app" and "store" are both generic phrases that can't be trademarked.

Now, after more than two years of litigation, Apple has dropped its case. There was no settlement; Apple just walked away before a trial. It had to give Amazon a "covenant not to sue" over the issue, or else Amazon would have continued with its counterclaims seeking to knock out Apple's trademark.

"This was a decision by Apple to unilaterally abandon the case and leave Amazon free to use 'appstore,'" Martin Glick, a lawyer for Amazon, told Reuters.

Apple tried to put the best face possible on a lawsuit that it pursued for two years and then gave up on.

"We no longer see a need to pursue our case," Apple spokeswoman Kristin Huguet said. "With more than 900,000 apps and 50 billion downloads, customers know where they can purchase their favorite apps."

Of course, litigation is unpredictable, and trademark cases rest on consumer perceptions, which can be especially open to interpretation (not to mention measured with pseudo-scientific surveys). But this case had already progressed to a point where Apple was likely throwing good money after bad. The judge tossed out Apple's false advertising claims in January, and in a hearing last year she showed deep skepticism that there was any consumer confusion between Apple's App Store and Amazon's Appstore for Android.

In Apple's filings last year, it had plead that it was a "pioneering brand" and had played a "unique role in educating consumers about the product market."

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Joe, you might find this an interesting addendum to this story: Microsoft actually filed an objection at the Trademark Appeal Board for Apple's App Store trademark back in July 2010 during the trademark application Opposition Proceeding:

Microsoft wrote:

When viewed as a whole, the combination of the generic term "app" with the generic term "store" is nothing more than the sum of its parts and is not capable of identifying and distiguishing a single source. An "app store" is plainly a store that sells apps.

The appeal was suspended in 2011 when Apple v Amazon started up, waiting for that case to be decided before deciding on the appeal. Apple giving up on this lawsuit is almost certainly bad news for their trademark appeal, so there really was no reason for Amazon to press the case.

In Apple's filings last year, it had plead that it was a "pioneering brand" and had played a "unique role in educating consumers about the product market."

Really? How does offering a device with an exclusive application store perform any kind of education for another user of a competing brand? They didn't teach consumers what applications were or how to use them. I can see why these filings with these statements didn't hold much weight.

"We no longer see a need to pursue our case," Apple spokeswoman Kristin Huguet said. "With more than 900,000 apps and 50 billion downloads, customers know where they can purchase their favorite apps."

Before this lawsuit, customers clearly had no idea where they could go to buy there iOS applications. I can't remember the number of times that I tried to install applications on my device only to realize they were from the App Store for Amazon and didn't work on my Apple-branded device.

I do have a question though. Though Apple still has a trademark on "Appstore", isn't walking away from this lawsuit pretty much going to cause them to lose their trademark anyway? If Amazon can just go about using it, why can't others use it and point to Apple caving as evidence of the term being generic?

So basically, if you are someone like Amazon with loads of $$ Apple is willing to walk away with its tail inbetween its legs...if you are mom and pop store... try using "AppStore" and get the fruit releasing its lawyer hounds after you.

I do have a question though. Though Apple still has a trademark on "Appstore", isn't walking away from this lawsuit pretty much going to cause them to lose their trademark anyway? If Amazon can just go about using it, why can't others use it and point to Apple caving as evidence of the term being generic?

They could, and they'd very likely win, too, if it went to court (actually, they'd likely win without this case to point to, since Amazon was likely to win in the first place). Apple is either not intending to pursue trademark claims in the future, or simply hoping it never goes to trial (which severely limits the targets they could sue to people who'd be unable to defend themselves).

Despite the fact Apple might have lost the case anyway, I have a strong feeling that their new CEO Tim Cook did and does not want to engage in trivial lawsuits as their former CEO. For Steve Jobs it was far more personal which is never a good idea when you run a billion dollar company

Ohhh so that's the App Store you were talking about... I forgot which device I was using and tried to download something from the wrong store... I really wish someone out there would teach me the difference between the Apple App Store and the Android Appstore. So iOS != Android?

It seems unfortunate that the judge can't issue a decision and invalidate the "trademark." Instead leaving it in a nebulous place where it probably won't hold up and yet anyone using it is still at risk of having to waste money in court. Neither of the parties care, but maybe the system should.

Joe, you might find this an interesting addendum to this story: Microsoft actually filed an objection at the Trademark Appeal Board for Apple's App Store trademark back in July 2010 during the trademark application Opposition Proceeding:

Microsoft wrote:

When viewed as a whole, the combination of the generic term "app" with the generic term "store" is nothing more than the sum of its parts and is not capable of identifying and distiguishing a single source. An "app store" is plainly a store that sells apps.

The appeal was suspended in 2011 when Apple v Amazon started up, waiting for that case to be decided before deciding on the appeal. Apple giving up on this lawsuit is almost certainly bad news for their trademark appeal, so there really was no reason for Amazon to press the case.

straightforward. Amazon wants to use the term "appstore" without getting sued by apple.

Apple sued to collect damages and prevent Amazon from using the term "appstore". Amazon counterclaimed that Apple's trademark was invalid. Apple wants to drop its suit, because it doesn't like how the case is going. They move to dismiss. The problem is that while they can dismiss without prejudice to refiling later, if they do this, their tm is still at risk because Amazon has counterclaims that independently continue even if Apple gives up its claim.

So we see the relative strength of the parties here because Apple had to agree not to sue in the future in order to get Amazon to give up its counterclaim, even though Amazon didn't have to give up its right to claim in the future that Apple's trademark is invalid. So Amazon wins big here, because they are free of harassment from Apple going forward over the term appstore. Bonus, they let Apple keep the right to try to go after others for using the term, which may also benefit Amazon, now that they can use the term themselves.

"We no longer see a need to pursue our case," Apple spokeswoman Kristin Huguet said. "With more than 900,000 apps and 50 billion downloads, customers know where they can purchase their favorite apps."

Before this lawsuit, customers clearly had no idea where they could go to buy there iOS applications. I can't remember the number of times that I tried to install applications on my device only to realize they were from the App Store for Amazon and didn't work on my Apple-branded device.

So basically, if you are someone like Amazon with loads of $$ Apple is willing to walk away with its tail inbetween its legs...if you are mom and pop store... try using "AppStore" and get the fruit releasing its lawyer hounds after you.

I do have a question though. Though Apple still has a trademark on "Appstore", isn't walking away from this lawsuit pretty much going to cause them to lose their trademark anyway? If Amazon can just go about using it, why can't others use it and point to Apple caving as evidence of the term being generic?

Just walking away from a lawsuit couldn't be used as proof of much of anything, certainly not proof of generic-ness. It's quite different situation than losing on the merits, legally speaking, even if the business result is the same.

You really need to work on your PR. The "Post Jobs" era has made you appear far worse than you are, to the point that Samsung (who have a poor track record) look like the good guys. If we are not careful, we will forget who caused phone manufacturers to lift their game.

Pursuits of frivolous terms, rounded corners, green phone icons, etc ... have been very damaging to Apple - even non-tech savvy people have discussed these points and have shunned Apple.

I am looking forward to seeing the fruits of the new Apple under Tim Cook that innovates rather than litigates. Under Jobs, litigation was becoming a major business strategy.

I look forward to other legal cases being closed down, both from Apple and all the other companies in this space.

Quote:

Under Jobs, litigation was becoming a major business strategy.

Compare the revenue and profit received from product sales against the amount received and costs of the court cases. I think you'll find that the legal cases brought in a few hundred million compared to the tens of billions that products brought in.

Look at the chilling effect Apple's cases had on the industry... except there was no impact - we see plenty of variety in both Android and Windows Mobile. Only the closest of clones was harmed, and not greatly even then.

People like to cast the legal stuff as a business strategy, but the numbers tell a very different story.

There was no settlement; Apple just walked away before a trial. It had to give Amazon a "covenant not to sue" over the issue, or else Amazon would have continued with its counterclaims seeking to knock out Apple's trademark

Not sure what you mean here. The settlement was Apple's covenant not to sue--Amazon's price for not going ahead and burying Apple's claims in court anyway. Without that covenant, had Apple quit the case, then it very likely would have wound up with a nice judgement against it *and* lost the case anyway--unless it tried to appeal and decided to get back into the case, even should that have proved possible at that late date. The other part of the settlement, aside from the covenant, was Apple's agreement with Amazon that it did not own the trademark and that Amazon was as a result free to use the terms "App Store" as it wished. As is anybody else, too. Apple completely capitulated its initial position. The settlement was sufficient to satiate Amazon's interest in the matter.

Even though Apple was incredibly hard-headed and stubborn, and possessed of blinding hubris on this issue, it would appear that the cold, hard light of reality is beginning to pierce the Utopian thinking of Cook and some of his underlings, to the degree that they are actually beginning to question whether their Unicorns really can fly after all. It's nice to see the company recognize that simply having a lot of money to flash around doesn't mean you can do and say whatever you choose without consequence. Bringing the suit was stupid--nearly idiotic. Dropping the suit at this late date at least indicates somebody at Apple is thinking outside of the RDF box for a change. That's good to see--better late than never. We can only hope and keep our fingers crossed that this is not merely an aberration but a sign of something far more substantial and positive occurring in the company.

You really need to work on your PR. The "Post Jobs" era has made you appear far worse than you are, to the point that Samsung (who have a poor track record) look like the good guys. If we are not careful, we will forget who caused phone manufacturers to lift their game.

Pursuits of frivolous terms, rounded corners, green phone icons, etc ... have been very damaging to Apple - even non-tech savvy people have discussed these points and have shunned Apple.

I am looking forward to seeing the fruits of the new Apple under Tim Cook that innovates rather than litigates. Under Jobs, litigation was becoming a major business strategy.

How exactly would a person who owns an Apple product(iPhone, iPad, etc...), which as far as I know can only install applications from the Apple App Store, be able to use the Amazon App Store in the first place?